In Re Hans Oetiker

977 F.2d 1443, 24 U.S.P.Q. 2d (BNA) 1443, 93 Daily Journal DAR 658, 1992 U.S. App. LEXIS 25784, 1992 WL 277985

Opinions

PAULINE NEWMAN, Circuit Judge.

Hans Oetiker appeals the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences, holding unpatentable claims 1-14 and 16-21, all of the claims in patent application No. 06/942,694.¹ Oetiker appeals on procedural and substantive grounds.

I

PROCEDURE

Background

All of the claims were finally rejected for obviousness in terms of 35 U.S.C. § 103. The Board, upholding the rejection, stated that “the examiner has ... established a prima facie case of obviousness ... which is unrebutted by any objective evidence of nonobviousness”. Oetiker stated that this Board holding was the first rejection of his claims for being “prima facie obvious”, and filed rebuttal evidence with a petition for reconsideration. The Board declined to consider the new evidence or change its decision.

Oetiker states that a holding of prima facie obviousness means, in patent examination, that the claimed invention is subject to a rebuttable presumption of obviousness; that is, if the applicant can provide evidence or argument in support of unobvi-ousness, such evidence and argument will be considered, and the question of patenta-bility will be redeeided on the entire record. Oetiker states that a rejection made in the words “prima facie obvious” is understood by patent examiners and practitioners as an invitation to provide such rebuttal evidence.

Thus Oetiker argues that a holding by the Board of prima facie obviousness is a new ground of rejection, for during prosecution the examiner did not reject the claims in these words. Treating it as such, Oetiker offered affidavit evidence not previously filed, and requested reconsideration on the basis of this new evidence, or remand to the examiner for this purpose, in accordance with 37 C.F.R. § 1.196(b):

§ l-.196(b) ... When the Board ... makes a new rejection of an appealed claim, the appellant may exercise either of the following two options ...:

(1) The appellant may submit ... a showing of facts ... and have the matter reconsidered by the examiner in which event the application will be remanded to the examiner....

(2) The appellant may have the case reconsidered under § 1.197(b) by the Board ... upon the same record.

The Board on reconsideration granted neither of the options of § 1.196(b), stating that it had not made a new rejection.

At argument before this court the Commissioner’s counsel suggested that Oetiker could refile his patent application, pay a new fee, and obtain review of this new evidence in a new examination. Oetiker states that he was entitled to a complete examination, and did not get it.

Discussion

The prima facie case is a procedural tool of patent examination, allocating the burdens of going forward as between examiner and applicant. In re Spada, 911 F.2d 705, 707 n. 3, 15 USPQ2d 1655, 1657 n. 3 (Fed.Cir.1990). The term “prima facie case” refers only to the initial examination step. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.Cir.1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). As discussed in In re Piasecki, the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.

After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. See In re Spada, supra; In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed.Cir.1985); In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985); In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed.Cir.1984).

If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent. See In re Grabiak, 769 F.2d 729, 733, 226 USPQ 870, 873 (Fed.Cir.1985); In re Rinehart, supra.

In reviewing the examiner’s decision on appeal, the Board must necessarily weigh all of the evidence and argument. An observation by the Board that the examiner made a prima facie case is not improper, as long as the ultimate determination of patentability is made on the entire record. In re Piasecki, 745 F.2d at 1472, 223 USPQ at 788; In re Rinehart, 531 F.2d at 1052, 189 USPQ at 147.

The record here reveals that the application was fully prosecuted. References were cited and applied by the examiner, the applicant responded with argument, and the examiner then issued a final rejection, stating why he was not persuaded by the applicant’s argument. On review the Board stated that its decision was reached “after careful consideration of the appealed claims, the evidence of obviousness relied upon by the examiner and the arguments advanced by the appellant and the examiner”. The Board explained why it was unpersuaded by Oetiker’s arguments on appeal. We discern no irregularity in the procedure. The Board, in explaining that the examiner’s rejections constituted a pri-ma facie case of obviousness, did not make a new rejection.

Oetiker also argues that the concept of a “prima facie case of obviousness” has no role outside of the chemical arts. Oetiker refers to the origins of this term in the chemical practice, where properties may not be apparent from chemical structure. Oetiker distinguishes mechanical inventions, where the properties and workings of a mechanical device are apparent in the drawing of the structure. We think that the PTO is correct in treating the concept of the prima facie case as of broad applicability, for it places the initial burden on the examiner, the appropriate procedure whatever the technological class of invention. That a prima facie case may be established, or rebutted, by different forms of evidence in various technologies does not restrict the concept to any particular field of technology. “[T]he requirement of unobviousness in the case of chemical inventions is the same as for other types of inventions”. In re Johnson, 747 F.2d at 1460, 223 USPQ at 1263. This procedural tool is recognized in fields outside of the chemical arts. E.g., In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed.Cir.1985); In re McCarthy, 763 F.2d 411, 226 USPQ 99 (Fed.Cir.1985); In re De Blauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984).

The Board’s usage of the term prima facie was imprecise for, as discussed supra, the term “prima facie obvious” relates to the burden on the examiner at the initial stage of the examination, while the conclusion of obviousness vel non is based on the preponderance of evidence and argument in the record. However, it was clear that the Board did not make a new rejection. Therefore the Board did not err in declining to consider at that stage the proffered evidence of commercial success.

II

THE MERITS

Oetiker’s invention is an improvement in a “stepless, earless” metal clamp, a hose clamp that was generally described in an earlier ’004 patent of Oetiker, but that differs in the presence of a feature that is described as a preassembly “hook”. This “hook” serves both to maintain the preas-sembly condition of the clamp and to be disengaged automatically when the clamp is tightened.

The cited references were Oetiker’s earlier-granted ’004 patent, combined with a certain Lauro ’004 patent. Lauro describes a plastic hook and eye fastener for use in garments, in which “unitary tabs of sewing needle puncturable plastic material ... are affixable to clothing and the like by sewing”. Oetiker argues that there is no suggestion or motivation to the artisan to combine the teachings of the cited references, and that Lauro is nonanalogous art. Oetiker concludes that these references were improperly combined; that a person of ordinary skill, seeking to solve the problem facing Oetiker, would not look to the garment art for the solution. Oetiker also argues that even if combined the references do not render the claimed combination obvious.

The examiner stated that “since garments commonly use hooks for securement”, a person faced with the problem of unreliable maintenance of the pre-assembly configuration of an assembly line metal hose clamp would look to the garment industry art. The examiner explained further by stating that “Appellant’s device as disclosed could be utilized as part of a garment”. The Board did not repeat or support the examiner’s argument, or discuss its relevance. Indeed, the argument is not supportable. However, the Board held that the Lauro reference, although not “within the appellant’s specific field of endeavor” is nonetheless “analogous art” because it relates to a hooking problem, as does Oetiker’s invention.

The Board apparently reasoned that all hooking problems are analogous. At least, that is the argument now pressed by the Commissioner. The Commissioner states in his brief on appeal that “A disengagea-ble catch, such as that used by Oetiker, is a common everyday mechanical concept that is variously employed in door latches and electrical and other switches, as well as in the hook and eye apparatus disclosed by Lauro”. No such references were cited, however. While this court may take judicial notice of common everyday mechanical concepts in appropriate circumstances, the Commissioner did not explain why a “catch” of unstated structure in an electrical switch, for example, is such a concept and would have made Oetiker’s invention obvious. Indeed, the Commissioner did not respond to Oetiker’s argument that the cited references provide no teaching or suggestion that Lauro’s molded hook and eye fastener, even if combined with Oetiker’s ’004 clamp, would achieve Oetiker’s purpose.

In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned. See In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed.Cir.1986). Patent examination is necessarily conducted by hindsight, with complete knowledge of the applicant’s invention, and the courts have recognized the subjective aspects of determining whether an inventor would reasonably be motivated to go to the field in which the examiner found the reference, in order to solve the problem confronting the inventor. We have reminded ourselves and the PTO that it is necessary to consider “the reality of the circumstances”, In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) — in other words, common sense — in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.

It has not been shown that a person of ordinary skill, seeking to solve a problem of fastening a hose clamp, would reasonably be expected or motivated to look to fasteners for garments. The combination of elements from non-analogous sources, in a manner that reconstructs the applicant’s invention only with the benefit of hindsight, is insufficient to present a prima facie case of obviousness. There must be some reason, suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field of the invention would make the combination. That knowledge can not come from the applicant’s invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed.Cir.1988); In re Geiger, 815 F.2d 686, 687, 2 USPQ2d 1276, 1278 (Fed.Cir.1987); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1147, 227 USPQ 543, 551 (Fed.Cir.1985).

Oetiker’s invention is simple. Simplicity is not inimical to patentability. See Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 594, 88 L.Ed. 721 (1944) (simplicity of itself does not negate invention); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1572, 1 USPQ2d 1593, 1600 (Fed.Cir.) (the patent system is not foreclosed to those who make simple inventions), cert, denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987).

We conclude that the references on which the Board relied were improperly combined. Accordingly, the Board erred in holding the claims unpatentable under section 103. The rejection of claims 1-4 and 16-21 is

REVERSED.

1 . Ex parte Oetiker, No. 89-2230 (Bd.Pat.App. & Interf. May 31, 1990; on reconsideration, August 23, 1990).